Intellectual Property Law

Ok, Tata, Bye Bye! WIPO Appeal Stayed Pending Outcome of Parties' India Dispute

By Michael Atkins

MakeMyTrip (India) Pvt. Ltd. sued Tata Sons Ltd. last year in the Western District to prevent the transfer of its oktatabyebye.com domain name following an adverse WIPO decision finding that MakeMyTrip had registered the domain name in bad faith. (STL post here.)

MakeMyTrip argued that “Ok, tata, bye bye,” is a common phrase in India. Tata Sons argued the domain name infringed its TATA trademarks.

As of March 18, the case is stayed.

At the time MakeMyTrip filed suit, the parties already had a similar action going in India. The parties stipulated that “The India action is based on substantially similar facts as the U.S. action, and, like the U.S. action, also seeks to prevent the transfer of the oktatabyebye.com domain name to Tata Sons.”

To avoid the duplication of parallel suits, the parties agreed to stay the Western District action pending the outcome of the India action. Indeed, the parties agreed to accept the outcome of the India action if it results in a judgment.

In the parties’ words: “The parties agree that, in the event the court presiding over the India action rules or otherwise determines that one of the parties is entitled to the oktatabyebye.com domain name, the parties will cooperate with one another and perform any other acts reasonably necessary to secure that party’s control of the oktatabyebye.com domain name and resolve this action.” 

The case cite is MakeMyTrip (India) Pvt. Ltd. v. Tata Sons Ltd., 09-1261 (W.D. Wash. March 19, 2010).

Full post as published by Seattle Trademark Lawyer on March 25, 2010 (boomark / email).